T 285/11 Wrong composition of the Opposition Division
The Board of Appeal discovers that both the first and second examiners of the Examining Division were also present in the Opposition Division. The Board remits the case to the Opposition Division and reimburses the appeal fee because the faulty constitution of the Opposition Division was a substantial procedural violation. The appellant requests that all examiners are replaced as being potentially biased. This request is refused.
Summary of
Facts and Submissions
I. European
patent No. 1 408 029 was granted on the basis of European patent application No
03 021 191.6. The mention of the grant of the patent was published on 22.
November 2006. The decision to grant the patent was signed, inter alia, by Mr.
R. as first examiner and by Mr. H. as second examiner.
II. In its
decision posted on 1st December 2010, the Opposition Division rejected the
opposition. The decision was again signed by Mr. R. as first examiner and by
Mr. H. as second examiner.
III. On 27
January 2011 the Appellant (Opponent) filed an appeal and paid the appeal fee.
The statement of the grounds for appeal was filed on 6 April 2011.
IV. In a
communication posted on 13. February 2012, the Board observed that the
composition of the Opposition Division did not comply with the requirements of
Article 19(2) EPC, since two members of the Opposition Division have taken part
in the proceedings for the grant of the European patent to which the opposition
relates. The Board indicated that it intended to remit the case to the
department of first instance and to reimburse the appeal fee because the faulty
constitution of the Opposition Division was a substantial procedural violation.
V. In its
letters dated 12 April 2012 and 10 July 2012 the Appellant requested that if
the case were remitted to the department of first instance the Board should
order that all of the members of the Opposition Division, who contributed to
the decision under appeal, be replaced. He argued that he did not wish to be
placed at a possible disadvantage by the involvement of the other members of
the initially appointed Division who have already made up their minds in the
previous opposition proceedings. If the case were remitted to an Opposition
Division, wherein members of the previous Opposition Division participated
again, these members would be influenced by their previous decision and a fair
and unbiased treatment of the case would no longer be possible. In referring to
decisions T 251/88, T 433/93, T 611/01 and T 400/02 he pointed out that for the
same situation the Boards have taken diverging decisions. This situation of
conflicting case law should lead to the referral of questions to the Enlarged
Board of Appeal in order to ensure uniform application of law. The Appellant,
therefore, requested during the oral proceedings before the Board on 21
November 2014 that the following questions, submitted as document "Fragen
GBK", be referred to the Enlarged Board of Appeal:
"1. Ist eine BK befugt, bei einer Zurückverweisung
anzuordnen, dass Mitglieder der Prüfungsabteilung oder Einspruchsabteilung, die
mit dem Fall befasst waren, ersetzt werden sollen, wenn im Verfahren vor der 1.
Instanz ein schwerwiegender Verfahrensfehler begangen wurde?
2. Wenn ja, gilt dies bei allen schwerwiegenden Verfahrensfehlern
oder ist das eine Ermessensentscheidung im Einzelfall?
3. Wenn es eine Ermessensentscheidung im Einzelfall ist,
nach welchen Kriterien ist dieses Ermessen auszuüben?"
VI. In its
letter of 23 April 2012 the Respondent (Patent Proprietor) stated that it did
not maintain its request for oral proceedings should the Board remit the case
to the department of first instance. Further, it argued that the participation
of members of the previous Opposition Division in the repeated opposition proceedings
did not relate to an unfair treatment of the parties. Even if members of the
previous Opposition Division might be influenced by their previous opinion on
the technical issues, this would not constitute partial behaviour, since
deciding on technical issues was part of an examiners work. The case law cited
by the Appellant did not constitute a conflicting case law, because it did not
relate to the same situation, but to cases of substantial procedural violation
based on different Articles of the EPC. Further, the responses to the questions
referred to in document "Fragen GBK" would not provide any guidance
for the decision to be taken in the present case. Therefore, a referral of the
questions to the Enlarged Board of Appeal did not appear appropriate.
VII. The
Appellant requested as a main request that the decision under appeal be set
aside and that the case be remitted to the Opposition Division for further
prosecution with the order that all members of the Opposition Division be
replaced, and as an auxiliary request, that the questions filed at the oral
proceedings before the Board on 21 November 2014 in the document "Fragen
GBK" be submitted to the Enlarged Board of Appeal. The Appellant further
requested that the appeal fee be reimbursed.
VIII. The
Respondent requested that the case be remitted to the Opposition Division for
further prosecution.
IX. At the
end of the oral proceedings the decision of the Board was announced.
Reasons for
the Decision
1. The
appeal is admissible.
Main
request
2. Under
Article 19(2) EPC, "[a]n Opposition Division shall consist of three
technically qualified examiners, at least two of whom shall not have taken part
in the proceedings for grant of the patent to which the opposition relates. An
examiner who has taken part in the proceedings for the grant of the European
patent may not be the Chairman."
3. In the
present case, the first member and the second member of the Opposition Division
had taken part as first and second members, respectively, in the proceedings
for the grant of the opposed patent when they signed the communication dated 24
May 2006, which established the text of the patent to be granted. For this
reason, the composition of the Opposition Division violated Article 19(2),
second sentence, EPC.
4.
Violations of Article 19(2) EPC are substantial procedural violations which
lead to a remittal of the case under Article 111(1) EPC and to the
reimbursement of the appeal fee (see decisions T 251/88, T 939/91, T 382/92, T
476/95, T 838/02, none of them published in the OJ EPO).
5. The
decision under appeal therefore has to be set aside and the case has to be
remitted to the department of first instance. The appeal fee has to be
reimbursed.
6.
Replacement of all members of the Opposition Division
6.1 According
to its main request the Appellant requested that upon remittal to the
department of first instance the Board should order that all members of the
Opposition Division, who contributed to the decision under appeal, should be
replaced. The reason being that he did not wish to be placed at a possible
disadvantage by the involvement of the other members of the initially appointed
Division, who might be influenced by their previously taken decision. This
would no longer allow a fair and unbiased treatment of the case.
6.2 The
Appellant has cited various cases supporting its position that the Board should
order the replacement of all members of the Opposition Division upon remittal
of the case.
Only one of
the cited cases, T 251/88, concerns a wrongly constituted Opposition Division
under Article 19(2) EPC. The other cited decisions concern various other types
of substantial procedural violations. The Board finds decision T 251/88 of
little assistance as no reasons are given as to why the Board in this case
ordered the replacement of all members of the Opposition Division upon remittal
of the case.
6.3 The
decision to order the replacement of all members of the Opposition Division
upon remittal of the case, involves the exercise of the Board's discretion in
such a matter (see G 5/91, point 6, OJ 1992, 617). The exercise of its
discretion necessarily involves a consideration of the particular facts of the
case in question; hence the nature of the substantial procedural violation in
question needs to be taken into account.
6.4 The
Board notes that in all the cases cited by the Appellant, (except for T
251/88), the substantial procedural violations in issue were linked to various
irregularities in the conduct of the proceedings which could be traced back to
the way the actual members of the first instance department in question chose
to conduct the proceedings. In the present case, the substantial procedural
violation in question, the non-compliance of the composition of the Opposition
Division with Article 19(2) EPC, was not due to actions taken by the members of
the division but by their director exercising delegated powers under Article
10(2)(a) and (i) EPC.
6.5 The
Board further notes that if it simply remits the case to the department of
first instance, this leaves open the possibility that one, or two members of
the Opposition Division will have been members of the Opposition Division that
took the decision currently under appeal. In T 433/93 (OJ 1997, 509, see also R
21/11) and T 611/01 it was accepted that a new composition could be ordered if
otherwise the same question would be considered before the first instance
department in the same composition for a second time. In T 433/93 the Board
found that if a party had grounds to suspect that the Opposition Division in
the same composition would have difficulty re-hearing and dealing with the case
without being tainted by its previous decision, then the Board should order a
re-hearing with a new composition.
6.6 If the
Board is to actually have any discretion to exercise, the mere existence of
such a suspicion in the mind of a party cannot automatically oblige the Board
to order remittal upon the basis of an entirely new composition of the first
instance department. Hence such a suspicion must be one that a reasonable party
would entertain given the objective facts of the case. In other words would the
notional reasonable party consider under the facts of the case that the members
of the first instance department would be "tainted" by their previous
decision?
6.7 The
Board noted that Article 14 of the Service Regulations provides that officials
of the office are to exercise their duties and conduct themselves with only the
interests of the EPO in mind. In the context of this case this means that
members of the Opposition Division will apply the relevant provisions of the
EPC in an impartial manner. Thus a rebuttable presumption exists that officials
take their obligations under the Service Regulations seriously. If a party is
able to show that a member of the Opposition Division has, by his conduct,
demonstrated that the necessary impartiality is lacking, then he may be
replaced.
6.8 The
Board has not been presented with any evidence or arguments that the proceedings
before the Opposition Division were conducted by the members in an irregular
way. Thus, on the facts of this case, the Board concludes that a party would
have no objective grounds to suspect that the members of the Opposition
Division would not observe the obligation of impartiality under the Service
Regulations if called upon to re-hear the case. Hence the Board is not minded
to order the remittal of this case to an Opposition Division with a completely
new composition.
Auxiliary
request
7. Referral
of questions to the Enlarged Board of Appeal (Article 112(1) (a) EPC)
7.1 The
Appellant argued that in the decisions T 251/88, T 611/02 and T 433/93 the
Boards found that a substantial procedural violation has occurred and decided
to order replacement of all members of the previous Opposition or Examining
Divisions, whereas in decision T 400/02, which related to the same situation,
the Board explicitly did not order the replacement of all members. This finding
amounted to a situation of conflicting case law. In order to ensure uniform
application of law it required that the questions submitted as document
"Fragen GBK" (see paragraph V. supra) be submitted to the Enlarged
Board of Appeal.
7.2
However, the decisions referred to by the Appellant do not relate to the same
legal situation, but concerned cases of substantial procedural violation, which
were based on different regulations of the EPC, namely Article 19(2) EPC in
case of decision T 251/88 and violation of the right to be heard (Article
113(1) EPC) in case of the decisions T 400/02, T 433/93 and T 611/01.
Therefore, the Board does not consider that there is conflicting case law,
which could justify the referral of questions to the Enlarged Board of Appeal.
7.3
Further, the questions in document "Fragen GBK" (see paragraph V.
supra) relate to whether a Board of Appeal has the power to order replacement
of members of an Examining or Opposition Division in case of a substantial
procedural violation (question 1),
if the
answer to question 1 is affirmative, to whether it is within the discretionary
power of the Boards to order replacement of members of Examining or Opposition
Divisions in all cases of substantial procedural violation (question 2) and
to which
criteria have to be applied when exercising its discretionary power in this
respect (question 3).
7.4
Irrespective of how the answers to these questions could read, they appear to
be of no relevance to the decision to be taken in the present case (see
paragraph 5 supra). Therefore, the questions in document "Fragen GBK"
reflect a purely theoretical interest in clarifying points of law which do not
justify a referral to the Enlarged Board of Appeal (see T 835/90).
Order
For these
reasons it is decided that:
1. The
decision under appeal is set aside.
2. The case
is remitted to the department of first instance for further prosecution before
an Opposition Division constituted in accordance with Article 19(2) EPC.
3. The
appeal fee is reimbursed.
SHARE:
This decision leads to interesting questions, and may be one day the EBA will have to look into the matter.
ReplyDeleteThere exists a series of decisions of BA in which they have been ordering a new composition of the ED or OD when remitting after a substantial procedural violation.
The question is thus whether a BA has the power to order a different composition when remitting after a substantial procedural violation.
If the violation is due to a wrong composition of the OD, i.e. which is not in accordance with
Art 19(2), then such an order might appear justified. When the case is remitted it is doubtful that the same mistake would be repeated, so that ordering a change is not something which seems absolutely necessary. It also very probable that the EPO has a kind of built-in safety measure in order to avoid such wrong compositions of an OD, but those systems can be tricked out.
If the appellant request a new composition of the ED or OD, should he fear to be not fairly treated if the case is remitted to the same division, then it is more than doubtful that a BA has a legal basis in the EPC to order a change of the composition of an ED or OD. The same applies if an ED or an OD has overlooked a request for OP or has forgotten to decide upon a request of a party or to discuss an argument of a party. Such mistakes should not occur, but to then go over to suspect a division of partiality is going too far, unless there are clear circumstances, see below.
And yet some BA seem to feel empowered to give such an order. T 433/93, T 95/04 and T 601/11 are examples of such decisions.
Other BA have denied any competence in the matter, see T 1221/97, and T 402/02, or have stated that the composition of a division is part of the allocation of duties within the departments of first instance and, therefore, an administrative function which is the primary competence of the responsible director, cf. T 838/02 and T 2111/13.
In any case, should a party claim partiality of one or more members of a division, then G 5/91 applies, cf. T 838/02.
The situation is different in case of remittal after an allowable petition for review, as
R 108(3) gives expressis verbis competence to the EBA to order a change in composition of the Board. There is no similar provision in case of remittal by a BA to the first instance.
T 900/02 will remain a one-off decision, as it is not frequent that a member of an OD leaves the EPO to work for one of the parties and comes back to the EPO later, whereby the OD took an inordinate length of time to issue the minutes and the decision. In this case partiality could not be demonstrated, but not ruled out either, so ordering a change of composition is to be seen rather to be the exception than the rule.